Usually when people hear the word “prosecution” there is an assumption of litigation from the plaintiff’s perspective. Patent prosecution is one of the few exceptions. Patent prosecution, however, does not include or refer to any patent litigation. Instead, the term refers to the process of drafting and filing a patent application and to all the interactions and negotiations with the patent office. These interactions may also be distinguished as pre-grant prosecution (negotiations prior to the grant of the patent) or post-grant prosecution (covering matters that take place after the grant of a patent, such as claim amendments, reissues, etc.).
Patent Prosecution Process Overview
After filing a patent application, the applicant is responsible for paying fees, submitting the appropriate forms and receiving confirmation that the application has been recorded. Then, patent authority assigns an examiner to review and examine the application. As a result of such an examination, the patent applicant or his/her representative will receive an Office action–a response from the Patent Office. During the examination, the examiner will search for potential prior art to the claims of the patent application. If he/she finds such prior art, the affected claims will be rejected. The Office action will notify the applicant of the results of the examination, including the rejected claims and the examiner’s detailed technical and/or legal arguments for such rejections. The applicant has a chance to review the examiner’s arguments and respond accordingly. Most patent claims are typically rejected by the examiner during the initial review. It may take one or two iterations of written or oral arguments with the examiner to have some or all of the claims allowed. At the end, if any claims are allowed, a Notice of Allowance will be sent to the applicant. It is important to understand the process and have sufficient experience in dealing with a patent office to enable a successful outcome.
The GHB Intellect IP Consulting team is well-versed in the process and experienced in the associated negotiations with the patent office to significantly improve the success rate of patent applications while expediting the process for the applicants. Our patent prosecutions are most commonly requested when an applicant files their application with the US Patent and Trademark Office (USPTO). The process below outlines the usual steps associated with the USPTO patent prosecution
The patent office houses patent examiners whose role is to first review the patent application for patentability according to a detailed list of laws, regulations, policies, procedures, guidance and training. To cut to the heart of their responsibilities, the examiner must first evaluate whether the patent application claims are clearly explained in the application specification and if those claims specifically identify and claim the invention. The patent examiner must also conduct a patent search that includes both current patents and published applications, as well as foreign patents and non-patent literature to verify that the claimed invention is new and non-obvious.
The official USPTO patent process flow chart is more detailed and includes the following steps. First, it conducts formalities reviews, notifies applicant of issues through the Official Filing Receipt. It assigns a Class/Subclass to the patent and designates a specific Technology Center, which then dockets the case to a patent examiner. The patent application is then published under 35 USC 122(b) and the assigned examiner processes cases in order of date filed. A substantive examination of the application then occurs (which can be expedited through an Accelerated Examination application). After the examination, the applicant is notified via a non-final Office action. (A non-final Office action is one that allows the applicant to request reconsideration or further examination.) The applicant has a chance to respond to the Office action and the examiner will then consider the response before determining to allow or reject the application claims.
The actions that take place following an Office action are incredibly important. This is particularly because 85% of the applications receive an initial rejection. How the applicant responds to the Office actions will have a profound effect on the outcome of the application.
Patent Application Response and Amendment
Once the Office action is sent, the applicant has the chance to make a response and/or amendment to the patent. Over 50% of all patent applications ultimately make it through the process. What brings these applications from a 15% initial success rate to over 50%? Putting together a team of technology experts and a patent attorney who deeply understand the details of the technology associated with the application and crafting a high quality responses is the critical factor that moves those applications to be granted.
The response document points out perceived errors in the Office action and may include an amendment to the claims that clarifies the invention or makes it more specific in order to avoid issues with the referenced prior art. A well-crafted explanation of how a claim maintains patentability must include a response to every objection made in the rejection. However, the patent attorney must consider the US Patent Act, which states “no amendment shall introduce new matter into the disclosure of the invention.” This means that amendment of the current claim must be completely supported by the patent specification (main body of the patent application describing the invention) so as not to trigger the need for a new application.
Timeliness is another important matter to consider when responding to a rejection in an Office action. An applicant has 3 months to respond without additional fees. After 3 months, an additional 3 months can be requested with a monthly fee due upon submission. After 6 months, the application is then considered abandoned and can only be reviewed again in rare circumstances by filing a petition and submitting an additional petition fee. Hence, it is imperative to be prepared with a team of technology and intellectual property experts prior to receiving a rejection.
USPTO Final Rejection
As mentioned, over 30% of all patent applications get approved with a response to the Office action. However, if the negotiations do not include strong enough arguments, the patent examiner will reject the application’s patentability. The second Office action is a notification to the applicant of continued rejection and is usually considered final because the accepted response is limited to abandoning the application, negotiate a request for reconsideration, appeal the final rejection, or file a request for continued examination.
The amount of time to oppose this final rejection is also limited in the same way the first Office action is. If an appeal is warranted, the rejection is sent to the Patent Trial and Appeal Board to conduct reexamination proceedings via trial. There are a host of additional requirements that occur at this stage and ultimately a decision may not be made for years, especially if it continues to the Court of Appeals for the Federal Circuit.
The final alternative to an appeal is to continue patent prosecution by filing a request for continued examination (RCE) and a response to the final rejection. The patent office can allow the patent to be granted or can continue to write Office actions. In some cases, final actions can occur a handful of times.
GHB Intellect is a full-service intellectual property consulting and engineering services firm. With a growing cadre of hundreds of industry-seasoned experts & professionals, as well as access to full suites of design and testing equipment, we specialize in high-tech, science, and innovation.